Fundamentals of Patent Law and Implications on Optoelectronic Devices

1. Fundamentals of Patent Law and Implications on Optoelectronic Devices Andy Pettit Greg Rosenthal

3. Among Apple’s 1,298 mobile patents, some individual technologies stand out as key indicators of what the future of smartphone designs may hold.

4. Core Technology Areas of Apple Patents

5. Fundamentals of Patent Law • The American patent system is authorized by Article 1, Section 8(8) of the Constitution. “ … Congress shall have power … To promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;” • But how does Congress do that? See 35 U.S.C. § 154. “Every patent shall … grant to the patentee … the right to excludeothers from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States …” • A patent grants the inventor rights to exclude others from practicing his/her invention in exchange for public disclosure.

6. Patentable Subject Matter • So what is a patent? See 35 U.S.C. § 101. “ Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent …” • Patentable subject matter falls into four main categories: (1) process; (2) machine; (3) manufacture; or (4) composition of matter. • Patentable subject matter must satisfy three main requirements: (1) New/Novel; (2) Useful/Utility; and (3) Non-obvious.

7. Patentable Subject Matter • The United States has two complementary methods to create new law: Statutory Law and Common Law. • Common Law is created by courts in published opinions. Chakrabarty: Patentable subject matter includes “… anything under the sun that is made by man.” Mayo v. Prometheus: “… laws of nature, natural phenomena, and abstract ideas are not patentable.” • When filing an application, the inventor must clearly indicate what technology is being “claimed.” An inventor cannot claim discoveries of natural phenomena but may be able to claim specific implementations of those phenomena.

8. Patentability Requirements • Novelty • Is your invention different from what is already known to the public? • Utility • Is your invention capable of use and does it provide some identifiable benefit? • Non-obviousness • Is the invention an adequate distance beyond or above the state of the art? • Would a “person having ordinary skill in the art” know how to solve the problem at which the invention is directed?

9. Tips and Tricks • Use a lab notebook. • Have detailed descriptions and dates. • Have a colleague or supervisor review and sign (occasionally). • Be aware of the AIA. • The U.S. has transitioned to a first-to-file system; if another inventor files before you all of your rights will be lost. • Think about patentability and disclosure. • If you plan on presenting or publishing, use caution. • Non-disclosure agreements (NDAs) are a good option. • Public disclosure of your invention can prevent you from getting a patent. • Do a basic web search on your invention. • Don’t invest the money required if someone else has already developed the same idea.

10. Tips and Tricks • Consider a provisional patent. • Provisional patents retain an earlier filing date, but do not provide protection. • Provisionals preserve rights without a huge financial commitment. • A provisional costs ~$130, a full utility application written by a firm will cost ~$10,000. • But have a patent agent or attorney draft the application. • Knowing the technology does not (necessarily) qualify an inventor to write a patent application; drafting claims is an art. • Don’t sell or offer to sell your invention. • Don’t lie about your invention. • Lies about disclosure or conception dates will destroy all patent rights. • Consider the possibility of joint inventorship. • Any individual who contributed at least one patentable idea is a co-inventor.

11. Tips and Tricks • Remember that patents are territorial. • A U.S. patent will only protect inventor rights within the United States (with some exceptions). • Any inventor who is interested in filing in other countries must do so within 12 months.

12. Deconstructing a Patent • Title • Inventor • Issuance Number • Issuance Date • Filing Date • References • Abstract • Figures • Description • Claims

13. Example: Gould Laser Patent Townes/Schawlow: Bell Labs Abandoned infrared to concentrate on visible light Filed patent application on “optical maser” Published the term LASER at a conference Began working on “laser” Begin study of infrared laser Patent filed Patent rejected Patent granted April, 1959 March, 1960 1960 1959 November, 1957 July, 1958 Late 1957 1957 Gordon Gould

14. So who is the inventor? • Gould filed suit claiming that he was the first inventor based on 1957 notebook. • A few major problems: • The notebook did not sufficientlydescribe the lasing process. • The notebook lacked any dates. • Gould ultimately lost the battle over the original laser patent.

15. So who is the inventor? • BUT Gould continued to file continuation applications linked back to his original (undisclosed application). • Gould won a number of patent suits beginning in 1977 and continuing through 1987. • By this time, the laser had become widely adopted. • Gould’s patents, despite covering limited applications of laser technology, were worth tens of millions of dollars.

16. Questions? Andy Pettit Andrew.T.Pettit@att.net Greg Rosenthal gregorybrosenthal@gmail.com